How Drunk Would You Need To Be To Confuse Jack Daniel's With Cayman Jack?

from the this-town-ain't-big-enough dept

Apparently JDPI, the company behind Jack Daniel's whiskey, has no trademark inhibitions. Through LexisNexis we learn that Mark Anthony International, another alcohol company, has filed a lawsuit (pdf and embedded below) seeking declaratory judgement that they can obtain and use the trademark "Cayman Jack", after JDPI disputed their trademark application and sent them a legal threat.

Quick, look at these two bottles:

How hurried and moronic would you have to be to get them mixed up? Yes, they both use the name "Jack". If a customer is drunk enough to confuse the world's best selling whiskey with a "margarita-flavored malt beverage", they are probably well past the point of distinguishing individual words, let alone of thinking, "Wow, this clearly Jack Daniels-endorsed luxury liquor certainly changes my opinion of that brand". If such a person does exist, they must get pretty confused sometimes, since as Mark Anthony points out in its filing, the liquor store has no shortage of Jacks:

The [trademark] application was examined by the United States Patent and Trademark Office ("USPTO") and found to be entitled to registration and published in the Official Gazette on March 9, 2010.

The fact that the USPTO believed CAYMAN JACK to be entitled to registration is wholly unsurprising given the prevalence of other "Jack" named drinks in the marketplace. The JACK DANIEL'S mark already coexists with other "Jack" named alcoholic beverages, including PANAMA JACK and CALICO JACK for rums; CACTUS JACK for tequila; PAPA JAC for alcoholic cocktails; YUKON JACK for liqueur; SCRUMPY JACK for cider; DEADEYE JACK, THIRSTY JACK, BLACK JACK STOUT, JACK RABBIT PALE ALE and JACK'S PUMPKIN SPICE ALE for malt beverages; HONEYJACK for mead and hydromel; and BLACKJACK PASTURE, JUMPIN JACK and BLACKJACK WINES for wines.

The lawsuit gets into a lot more detail, showing how the products are marketed in different ways to entirely different audiences, and walking through the entire brand development process for Cayman Jack to demonstrate that it had nothing to do with Jack Daniels. Hopefully the court sees that there's no chance of confusion here and grants them their declaratory judgement—but as we've seen in similar cases, some judges prefer to feed the ownership culture by granting companies total control over simple symbols and words.

Really?

I just got a call from a buddy of mine. He's being sued for being named Jack. It's his first name. And he's facing a $150,000 fine for every time he wrote his name 'Jack' on his assignments in school. While the $150k fine might be copyright infringement and not trademark (as this story is about), they're still borrowing it. Apparently the school has been contacted and all paperwork with the name "Jack" must be turned over so that the exact number of times his name was used can be counted. Also, his driver's license is an automatic million dollar lawsuit against the MVD for daring to print the name.

I wonder if they'll also sue the guy who came up with "Jack Squat". Do you think they'll go looking for them? What if the guy really exists? Would they attempt to get money out of Jack Squat? Would it be possible? Since every company out there seems it can get blood from a stone (or money from nothing), they certainly have a chance to get something from Jack Squat, who apparently has nothing.

And don't even get me started on Jack Schitt. That guy is in *real* trouble. His name is on at least half the internet, and since that's half the planet, they apparently feel they deserve half the world's currency.

Sadly, what will be learned from this when JDPI lose is not that it was a stupid suit, but proof of 'dilution' of trademark. i.e. since they didn't protect the name the very first time a competitor used the word 'Jack' they allowed the 'dilution' of the mark. This will only encourage others to sue immediately anyone using a name with even the slightest resemblance to a known name.

I agree with you Mike. However I think I have a pretty good idea where this comes from and why they are doing this now when they never did before when all the other brands that were listed were created. With their normal product there is no confusion and never will be. EVERY reasonably sane person knows Jack Daniels Old No 7. However in more recent times they have been releasing spin off products that relate via the common name "Jack" (ie. Gentleman Jack Whiskey) and they are afraid that this product will be seen as something they released as a spin off when it's not. I still don't think they should be able to claim it, but I can see where they would be concerned about it.

I think Cayman Jack should just change its name to Pete or something. It could lead to bad product association. After a few drinks when someone orders a Jack and Coke, some dumb drunk bartender might get confused, hold up both bottles and ask "Which one?". Then when the customer responds "The JD, I dont want that crock of shite one", I could see where some might get the wrong impression.

If you're going to be the TD trademark guy, perhaps you should learn a little of the doctrine so you don't sound like a "moron in a hurry." The similarity of the packaging is but one of about nine factors (depending on jurisdiction) in the likelihood of confusion calculus. You need to look at all of the factors to make your argument.

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Um, I'm not the "TD trademark guy" - and I'm well aware that identical packaging is not the only factor. But this case is not deserving of a serious, detailed trademark analysis. Frankly, it's deserving of mockery, which is what it got. Or are you claiming that there IS a likelihood of confusion here?

About Whiskey

Jack, they are acting like they are full of themselves? They have this name and the alcohol market cornered with about a 100 million people a lot drunker than they should be, not to mention all the stupid things people do when they drink this stuff.. all the gun fights in all the old west saloons, buffalos slaughtered, indians starved.. but, I don't know Jack about losing my brother to the stuff. They offer no lessons on how to drink their product responsibly, do they? Of course, its all about selling it, not drinking it.

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There's a nonfrivolous and colorable argument to that effect, which is what you'd see if you actually weighed the factors. How did you determine that the case didn't deserve "serious, detailed trademark analysis" if you didn't even do the analysis in the first place? That's called working backwards--which is the TD norm, I suppose. Carry on with your skimming the surface of the issues.

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Because the presence of a dozen other alocohols with Jack in the name sort of puts a bullet in all the factors, so it seemed tiresome to walk through them.

Likelihood of confusion pretty clearly fails on sight, sound & meaning. While both products are alcohol, the lawsuit clearly demonstrates that they couldn't be further apart within that market (one is a spirit, the other is a prepared drink, for one thing), so similarity fails too. Cayman Jack is narrowly marketed to a high-end consumer, which scores points on the sophistication-of-the-customer test, and rather reduces the customer overlap test. The presence of all the other Jacks, with no evidence of confusion, slaughters the test for that too. The detailed walkthrough of their brand development process shows that there was no intent to cash in on JD's good will.

As far as I can tell the only test that falls fully in favour of confusion is the fact that they will be available in the same stores. Albeit, alongside plenty of other Jacks...

There's some room to wiggle on some of those factors, but it seems pretty cut and dry that there's no chance of confusion here.

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Right, because the existence of at least fifteen other "jack" products don't make clear that there is already no likelihood of confusion.

BTW, you must work like 160 hours per week, because you seem to have no ability to triage issues based on high-level factors, which is what most highly-productive, analytical, and successful people do. I can't imagine how stressful it must be to have to do a deep and complete analysis on every issue prior to addressing it. How much time do you take to choose your clothes in the morning?

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Personally, I would need to know a lot more facts before I could argue this one for either side. I suppose one can argue it from "best guesses" as you are, but I prefer a less faith-based approach. I appreciate your effort to do some analysis, though.

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So, we've established that you complete a detailed, 50-page analysis to choose your underwear, spend extra-ordinary amounts of time analyzing issues that take others orders of magnitude less time, refuse to acknowledge any criticisms of your approach, and don't offer any explanation of why the analysis in this case (and others) falls short other than it fails to meet your incredibly arbitrary criteria of shallowness.

That about right?

Oh, and even though I'm not Mike (I'm Sneeje), you somehow believe that to be a veiled insult. It's not.

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Nope. I would need to know the actual facts of this case before I'd write an article about how clear the right answer is. Nor would I write such an article without explaining what the law on point actually is, and why I think the case would go the way I'm arguing for.

As it is, this is typical TD skimming the surface and working backwards. There's no analysis, no substance. All we get is some iteration of the idiotic "moron in a hurry" test, which as far as I know, was invented by TD. It's certainly not a reasonable shorthand for the actual analysis, which is a fact-based inquiry, not some faith-based nonsense like TD serves up.

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"Moron in a hurry" is not an actual doctrine at either common or statutory law. Don't confuse a turn of phrase that Apple used in some brief for an actual, legal doctrine. Anyone citing the "moron in a hurry" test is a moron.

The point is I was trying to make to you is two-fold. You don't have enough facts to have an educated opinion (for example, you don't know enough about evidence of actual confusion, plaintiff's good faith, survey evidence the strength of defendant's mark, whether defendant plans to "bridge the gap," etc.), and you don't understand the law enough to have an educated opinion (for example, your similarity analysis misses the mark since both marks use "Jack," you don't understand the effect of the other marks that use "Jack," you analysis of the market shows you don't understand how strong marks operate in related, but non-competing markets, etc.).

Your article was just the typical TD "Hey look at how dumb this rightsholder is!" nonsense. You may be right that there's no confusion here, but it's not because you applied the law to the facts (since you know too little about either). That was my point.

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The problem is that "moron in a hurry" is the only test you seem willing to apply. Everything else is, as someone else put it "faith based".

If you aren't the resident trademark expert, perhaps you should just refrain from writing shallow, meaningless posts on the subject. I know Mike pays you by the piece, but still, try to control yourself.

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They kinda have to.

Problem is, the copyright and trademark laws in the USA state that if a company does not prosecute all violations of it's copyrights and trademarks, it loses the ability to prosecute any, to avoid favoritism..

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Marcus, this is what it looks like when you get your ass handed to you. Your superficial treatment of the topic, an attempt to sound and be like Mike was spotted, and someone called you out for being an amateur hack.

Perhaps you can take this as advice: Next time you write a piece, actually try to get something other than the "patent / copyright / trademark owner bad" caveman mentality and actually dig a little deeper.

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"Moron in a hurry" is not an actual doctrine at either common or statutory law. Don't confuse a turn of phrase that Apple used in some brief for an actual, legal doctrine.

It's not a doctrine, but it's a test that is increasing in popularity, and one that we have always supported at Techdirt.

Anyone citing the "moron in a hurry" test is a moron.

I'm afraid that's bullshit, sorry.

Look, friend, in case you didn't notice this isn't a court of law. There's a reason I said at the end of the post that I wouldn't be surprised if the judgement went the other way. However, I firmly believe that if this was found to be trademark infringement, that would be a bad ruling and a sign that trademark law can be abused.

You can kick and scream and try all you want to invalidate that opinion, but I stand by it, and I stand by my interpretation of the legal status based on the information available in the lawsuit. And, again, I think the presence of countless other similar liquors on the market is pretty damning.

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Leigh's thought process is amusing. The fact that he thinks he's qualified to render an educated opinion on this trademark claim (while invoking the TD-certified "moron in a hurry" test, no less) is PRICELESS! The entertainment at TD never stops. Mike new clone is almost as much fun as Mike himself.